May 06, 2015

Disparagement, Political Correctness and the First Amendment.

by Guest Blogger


When the U.S. Patent and Trademark Office (USPTO) cancelled six federal trademark registrations for the WASHINGTON REDSKINS mark, the decision received a lot of attention. Registration was refused on the basis that the REDSKINS mark was disparaging to Native Americans at the time of registration. "Normal" people (non-attorneys) I spoke to were divided on their views of the decision. The cancellation decision remains on appeal.

As covered in this blog recently, the USPTO made a similar finding in a less well-publicized decision refusing registration of THE SLANTS mark for entertainment in the nature of live performances by a musical band comprised of performers of Asian descent. The refusal to register was later upheld on appeal by the U.S. Court of Appeals for the Federal Circuit.

Disparagement is a ground for refusal to register a trademark set forth in Section 2(a) of the Lanham Act, 15 U.S.C. Sec. 1052(a). I consider the term "disparagement" to be a fancy word for "disgusting." It is not hard for me to conclude that certain marks are disgusting and I may choose not to purchase good branded with these names as a result. But a larger question, whose time has now come, looms larger than ever. Who decides what is disgusting for purposes of bestowing the legal benefits afforded by registration with the USPTO?

The two-part test developed for the determination of a disparaging mark requires a showing that the mark is disparaging to "substantial composite of the referenced group." Nevertheless, a certain amount of subjectivity is unavoidable in reaching the conclusion that a mark is disparaging. When it comes to THE SLANTS, one person's disparagement may be another's humorous satire.

Among those commenting on the CAFC's decision was Judge Kimberly A. Moore who offered "additional considerations" in the CAFC's original opinion in the case. Shouldn't the protections offered by the First Amendment serve as important countervailing policy considerations to those values that underlie the disparagement provision of the Lanham Act? After all, if commercial advertising is protected speech then why not a trademark?

An earlier decision appeared to put the issue to rest by finding that First Amendment protections were not implicated by USPTO registration decisions because registration was not a prerequisite to trademark use.

However, in addition to the procedural and substantive advantages afforded to federally registered marks, the Supreme Court's very recent decision in B&B Hardware v Hargis Industries makes clear that findings by the USPTO (namely the Trademark Trial and Appeal Board) regarding likely confusion may have a preclusive effect on subsequent legal decisions involving the right to use marks. Maybe the right to registration isn't just about registration after all.

We will hope that these important questions explain the CAFC's sua sponte decision to vacate the court's original holding and order an en banc hearing on the cancellation decision.